The exhaustion of the right is that a trade mark holder may not object to the offer to sell or continue to market goods bearing that mark if the goods have previously been placed on the market in the territory of the Republic of Poland by the rightholder or with his consent (national exhaustion of rights) – this is the current thesis of the Supreme Court's V KK signature order. 297/17.
This provision was made due to the unequal criminal case-law of the ordinary courts, thus affecting existing doubts relating to the interpretation of the provision Article 305(1) industrial property rights, which reads: ‘Who, for the purpose of placing on the market, is liable to be liable to a fine, restriction of liberty or imprisonment for up to years 2”.
In view of the fact that the bottle is an essential commodity, separate from the gas sold in it, the Court considered that the sale of a cylinder marked with a trademark results in the exhaustion of the rights which, for the licensee, derive from that mark.
No crime when filling bottles with other business signs
The problem which is the subject of this case arose in criminal case law after the law of 30 June 2000 – Industrial property rights (hereinafter: ‘P.W.P.’) concern trade in goods, whereas reusable packaging is marked with the original trade mark and the entity not entitled under the protection right to that mark lists the goods in the centre of that packaging.
Therefore, the fundamental question is whether such an unauthorised entity will always be liable on the basis of the placing on the market of a product in a package marked with a trademark to which it has no rights. Article 305(1) p.w.p. This case occurred in the business segment, consisting in filling the gas cylinder by companies distributing it.
The Supreme Court has taken the view that a gas bottle used to inject gas into it is a reusable device and at the same time can be treated as a gas packaging. Usually distributors put their trademark on bottles. Since the company's logo on them is durable, it remains on it long after gas consumption.
In addition, it should be noted that first the purchase of gas in a cylinder at a particular distributor pays the price of gas, but also the price of the cylinder, which becomes its property after purchase.
During the subsequent purchase of gas from the same distributor, the consumer will pay only for the gas as it will be put into the same cylinder as the value mentioned. However, of course, the consumer is not obliged to purchase gas from the same distributor as the bottle originally placed on the market.
This means that as the owner of a cylinder, it has the full right to use it freely, thus using the cylinder to fill it with gas repeatedly, as intended. Therefore, the consumer has the right, as in practice, to go to a gas distributor representing another company in order to fill his own cylinder.
Time and Time first Therefore, after the amendment Article 305(1) The Supreme Court ruled in the case in which it was established that a gas seller does not counterfeit a trademark, but merely injects gas and sells it in a bottle marked with a registered mark.
Confirmation of EU practice
The order of the Supreme Court is, in effect, a repetition of the view previously expressed by the Court of Justice of the European Union in its judgment of 14 July 2011 (The signature. C-46/10).
The Court’s ruling was as close as possible to the facts in which one from entrepreneurs filled with gas bottles marked with three-dimensional trademarks in the shape of a gas cylinder, which belonged to another entrepreneur and after filling, sold gas to consumers.
The Court held that the holder of a trademark protection right imposed on a gas cylinder, which is intended to be reused, cannot prohibit the filling of these bottles with gas from other traders.
According to the Court, since the gas cylinder itself constitutes a commodity, its sale results in the exhaustion of the rights to the trade mark imposed on it.
In view of the fact that the bottle is an essential commodity, separate from the gas sold in it, the Court considered that the sale of a cylinder marked with a trade mark results in the exhaustion of rights which, for the licensee, derive from that mark. This is due to the fact that it is by the sale of the cylinder that the licensee implements the economic value of the mark placed on it, which is clearly a condition for the exhaustion of the protective right to that particular mark.
The Supreme Court, following a thorough legal examination of the case in question, found that the plea of infringement was entirely unsuccessful Article 305(1) By accepting that a gas cylinder is the subject of an executive act.
In the light of the above, the final judgment was acquitted as a result of the finding that a prohibited act was not committed at all because the protective right to the mark on the cylinder was exhausted.
Author:
Nikol Małaszewska-Dąbrowska
Manager at the Legal Department. From 2011 It provides advice to leading companies from various sectors of the economy. He has extensive experience in conducting comprehensive projects in the field of national and international law. It participates in legal and tax reviews conducted to identify risks. He is also the author of numerous articles on tax issues, published in the industry press.